The Madrid Protocol. Lynne G. Beresford Commissioner for Trademarks June 2007

Transcription

1 The Madrid Protocol at the USPTO Lynne G. Beresford Commissioner for Trademarks June 2007

2 USPTO statistics Estimated 376,000 classes to be filed in FY 2007 Filings at 9% above previous year First action pendency at 3.2 months Registration pendency at 16.4 months 410 examining attorneys 85% of eligible attorneys work at home full time

3 Foreign filing information The percentage of foreign applications filed into the U.S. has been gradually rising to nearly 20% After the U.S. began accepting Madrid filings, the percentage of Paris convention based applications dropped but were replaced by Madrid filings. Overall in the past year foreign filings (as a percentage of total filings) has remained relatively constant at about 18% to 20%

4 Foreign filings as a % of US filings Year Foreign Apps* US Apps % , ,388 21% , ,873 19% , ,218 18% , ,489 15% , ,501 18% , ,775 20% *Applications counted by classes

5 Comparing FY 04, 05 & 06 FY ,527 classes 9198, 3.1% were REPs* (2% of total applications) FY ,501 paid classes --19,635, 6% were REPs* (3.9% of total applications) FY ,775 classes 30,057, 7.8% were REPs*, (4.6% of total applications) *requests for extension of protection

6 Current U.S. information on Madrid filings (03/27/07) REPs received to date (classes) 35,112 International applications 9,054 International applications rejected 494 Irregularity notices 1,855 Subsequent designations 71 Replacements 10

7 Current U.S. information on YTD Madrid filings (June 8, 2007) Requests for extension to US 1,363 Subsequent designations 132 E-filed International applications 1,313 Paper filed international applications 50

8 Sample replacement text In the prosecution history of the replaced US application or registration

9 Sample replacement test Prosecution history text of the replacing registration

10 Sample transformation text

11 % of first action publications - February 07 Paper filed applications 10.5% TEAS* applications 14.0% TEAS* Plus 29.0% Requests for Extensions of Protection 02.2% *Trademark Electronic Application System

12 Survey of Issues in 301 Madrid Requests for Extension of Protection Statutory Refusals 56 of 301 (19%) refused on likelihood of confusion, mistake or deception concerning a prior registered mark or a pending application (Section 2(d) of the Act) 92 of the 301 (31%) refused on the basis of a statutory rejection (including section 2(d))

13 Survey of Issues in 301 Madrid Requests for Extension of Protection Identification of Goods/Services 239 of 301 (80%) requirement issued for clarification of wording, or classification of goods/services under the requested mark Entity (Legal Nature) 122 of 301 (41%) requirement issued for failure to state legal nature or entity recognized by the U.S. (bulk of refusals coupled with citizenship inquiry)

14 Survey of Issues in 301 Madrid Requests for Extension of Protection Significance Inquiry (Significance of Mark, Wording, etc.) 80 of 301 (27%) had a requirement made into significance of wording in mark (many times coupled with translation)

15 Survey of Issues in 301 Madrid Requests for Extension of Protection Citizenship of Applicant (Country of Organization, Place of Incorporation) 62 of 301 (21%) had a requirement made for need of citizenship or applicant, or country/place of organization/incorporation of the applicant requesting mark (usually coupled with refusal on entity grounds)

16 Tips for Holders of International Registrations 37 CFR 2.32 requires applications to include the citizenship of the applicant 37CFR 2.61(b) allows examining attorneys to ask applicant for pertinent information such as translation and transliteration

17 Tips for Holders of International Registrations 37 CFR 2.52(b)(1) requires that applicants registering a mark with color submit a color drawing and a description of where the color occurs in the mark 15 USC 1052(c) prohibits registration on the principal register of a mark that consists of or comprises a name, portrait or signature identifying a particular living individual without the written consent of that person

18 Tips for Holders of International Registrations 37 CFR 2.53(c) requires digitized images of the mark to display the mark in a manner that produces a high quality image when copied. The USPTO also requires the reproduction of the mark to depict only the mark sought to be registered and does not permit extraneous matter in the drawing.

19 Tips for Holders of International Registrations 37 CFR 37 CFR 2.52(b)(2) requires the mark to be depicted in a single rendition. Three dimensional features generally must be depicted in a single picture.

20 Identification and Classification Issues General rule is that the IB can classify but the US retains its practice requiring specificity in IDs Filing an application based on intent to use and including items that are clearly outside of normal business lines may raise questions from competitors or others who would like to cancel an extension of protection

21 IDs and Classification Example: Extension of protection claims paper goods in Class 16 Examining attorney asks for more specificity Owner responds that it makes paper plates Paper plates are clearly classified in Class 21

22 IDs and Classification Could proof of no intent to use on a single item in an extension of protection result in loss of all registration rights. See: Medinol Ltd. V. Neuro Vasx Inc. 67 USPQ2d 1205 (TTAB 2003) Goods were stents and catheters, use was alleged in connection with both items. Registration was cancelled for fraud.

23 Medinol ltd. v. Neuro Vasx Inc. 67 USPQ2d 1205 (TTAB 2003) The registrant filed an SOU stating that is was suing the goods on all of the goods stated in the NOA. In fact, the mark was only used on catheters but NOT stents. Registrant argued that is checked the box and overlooked the actual goods set out in the NOA. Registrant attempted to delete stents from its registration. (but does deleting the goods cure the fraud?)

24 J.E.M. International v. Happy Rompers 74 USPQ2d 1526 Cancellation proceeding where registrant averred use on 150+ goods in its SOU and in later Registrant argued that is failed to divide out the unused goods from the application because it misunderstood USPTO procedures. Petitioner asks what is so hard to understand about all? Respondent knew or should have known that mark was not in use on all of the goods.

25 Fraud on the Office What are the elements of Fraud? 1) false representation 2) material representation 3) made knowingly

26 Current Case law No cases turn on proof of no real intent to use the mark. However, cases filed with long lists of goods or services raise questions. Does an owner that claims it intends to use the mark on 65 single space pages of goods and services in all classes

27 What goods and services? Ex: services: Crematory services; evening dress rental; launching of satellites for others; ice breaking; massage; plastic surgery; operating lotteries; intellectual property watch service Ex: goods: seal skins for skis; silk worms; algae for human consumption; valves not of metal: optical character readers; chicken houses; computers; radiator flushing chemicals etc.

28 MM18 signature requirements Section 66(a), 15 USC 1141 states: A request for extension of protection of an international registration shall be deemed to be properly filed if such request, when received by the International Bureau, has attached to it a declaration of bona fide intention to use that is verified by the applicant for, or holder of the international registration

29 Who can sign MM18? Rule 2.33 provides that: A person who is properly authorized to sign on behalf of the applicant is:(1) a person with legal authority to bind the applicant (2) a person with first hand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney as defined in 10.1(c) an actual or implied written or verbal power of attorney from the applicant

30 10.1 defines attorney 10.1 (c) Attorney or lawyer means an individual who is a member in good standing of the bar of any United States court or the highest court of any State. A non-lawyer is a person who is not an attorney or lawyer

31 REPS are often received months after filing at the IB SN LGA SN QASight SN LINAY 800 days* 797 days* 790 days* USPTO has found more than 650 REPs that are > one year old at time of receipt *between filing at IB and receipt at USPTO

32 Average time of receipt in the USPTO for past 3 months Month Age Count January February March Average

33 USPTO Madrid Issues EOPs with extremely old filing dates Priority claims in international applications based on multiple basic applications/registrations MM2 form lack ability to indicate which goods/classes apply to which priority claim Country where organized not a mandatory requirement for an international application (necessary under US law)

34 USPTO Madrid Issues Provisional refusals, returned to IB as undeliverable mail, are forwarded to IB sends to applicant s national office International registrations with a color drawing of the mark, but no color claim Effect when designated country requires a color claim for color drawings

35 USPTO Madrid Issues If the IB issues an irregularity notice regarding the mark drawing, and the international applicant submits a substitute drawing, there is no procedure for the national office to re-confirm that the drawing matches the mark in the basic application/registration

36 USPTO Madrid Issues No procedure for international applicants to request a change/correction to the international application after certification by the national office No procedure for national office to inform IB of changes to the drawing after international application is certified

37 USPTO Madrid Issues No formal procedures if IB fails to forward provisional application, and the EOP application at USPTO abandons Corrections from IB to EOPs frequently cannot be accepted because correction materially changes mark or goods/services

38 Additional Information QUESTIONS?